UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG S. A.1
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`Patent Owner
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`IPR2018-00389
`PATENT 8,712,723
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` The owner of this patent is Uniloc 2017 LLC.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG S. A.1
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`Patent Owner
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`IPR2018-00389
`PATENT 8,712,723
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`IPR2018-00389
`U.S. Patent 8,712,723
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`ii
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`IPR2018-00389
`U.S. Patent 8,712,723
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
`V.
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`INTRODUCTION.................................................................................. 1
`THE ’723 PATENT ............................................................................... 1
`RELATED PROCEEDINGS ................................................................. 2
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ....................................................................... 4
`A.
`Claim Construction ...................................................................... 4
`1.
`“dominant axis”.................................................................. 5
`2.
`“cadence window” ............................................................. 8
`3.
`“logic” terms ...................................................................... 9
`The Pasolini Reference Was Already Considered by the
`USPTO ......................................................................................... 9
`The Applied References Fail to Disclose a“Cadence
`Window” .................................................................................... 10
`The Applied References Fail to Disclose Detected
`Motions “Within a Cadence Windows” ...................................... 14
`The Applied References Fail to Disclose an Update to
`the Cadence Window as “Actual Cadence” or
`“Cadence” Changes .................................................................... 15
`The Applied References Fail to “Assigning a Dominant
`axis with Respect to Gravity Based on an Orientation of
`the Inertial Sensor” ..................................................................... 15
`The Applied References Fail to Disclose “Detecting a
`Change in the Orientation of the Inertial Sensor and
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`iii
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`IPR2018-00389
`U.S. Patent 8,712,723
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`H.
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`Updating the Dominant Axis Based on the Change” .................. 22
`The Applied Reference Fail to Disclose Challenged
`Dependent Claims 2-3, 5-7, 11-13, and 15-18. ........................... 25
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL .................................... 25
`CONCLUSION .................................................................................... 25
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`VI.
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`VII.
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`
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom (previously filed)
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`iv
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`IPR2018-00389
`U.S. Patent 8,712,723
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC ( “Uniloc” or “Patent Owner”) submits this Response to
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`Petition IPR2018-00389 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 8,712,723 (“the ’723 patent” or “EX1001”) filed by Apple, Inc.
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`(“Petitioner”). The instant Petition is procedurally and substantively defective for at
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`least the reasons set forth herein.
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`II. THE ’723 PATENT
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`The ’723 patent is titled “Human activity monitoring device.” The ʼ723 patent
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`issued April 29, 2014, from U.S. Patent Application No. 13/018,321 filed January
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`31, 2011.
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`The inventors of the ’723 patent observed that, at the time, step counting
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`devices that utilize an inertial sensor to measure motion to detect steps generally
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`required the user to first position the device in a limited set of orientations. In some
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`devices, the required orientations are dictated to the user by the device. In other
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`devices, the beginning orientation is not critical, so long as this orientation can be
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`maintained. EX1001, 1:29-34. Further, the inventors observed that devices at the
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`time were often confused by motion noise experienced by the device throughout a
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`user's daily routine. The noise would cause false steps to be measured and actual
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`steps to be missed in conventional step counting devices. Conventional step counting
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`devices also failed to accurately measure steps for individuals who walk at a slow
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`pace. Id., 1:35-40. Accordingly, the inventors introduced determining a rhythmic
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`cadence and a correspondence cadence window concept that could anticipate when
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`an expected periodic user activity is expected to occur. Id., 3:46-4:4.
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`According to the invention of the ’723 Patent, a device to monitor human
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`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
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`determined, and the dominant axis is updated as the orientation of the inertial sensor
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`changes. Id., 2:14-19. Periodic user activity in a cadence window is counted and the
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`cadence is updated. Id., 3:46-4:4.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 8,712,723 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`Uniloc USA, Inc. et al. v.
`Apple Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`2-17-cv-00650
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`TXED
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`Sept. 15,
`2017
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`4-17-cv-00832
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`TXND Oct. 13, 2017
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`2-17-cv-01629 WAWD Nov. 1, 2017
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`2
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`
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`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple Inc. v. Uniloc
`Luxembourg SA et al
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`LG Electronics, Inc. et al v.
`Uniloc 2017 LLC et al
`Samsung Electronics America,
`Inc. et al v. Uniloc 2017 LLC
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`IPR2018-00389
`U.S. Patent 8,712,723
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`TXED Nov. 9, 2017
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`2-17-cv-00737
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IPR2018-01027
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`PTAB
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`5/4/2018
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`4-18-cv-02918
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`CAND
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`5/17/2018
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`IPR2018-01458
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`PTAB
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`7/27/2018
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`IPR2018-01757
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`PTAB
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`9/18/2018
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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` The Petition alleges that a person of ordinary skill in the art (“POSITA”)
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`would include someone who had, at the priority date of the ‘723 Patent (i) a
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`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
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`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
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`MEMS (micro-electro-mechanical) devices and body motion sensing systems.
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`Mr. Easttom disagrees with the definition of POSITA offered in the Petition,
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`specifically, instead of requiring two years of experience in working in “hardware
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`and/or software design and development related to MEMS (micro-electro-
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`mechanical) devices and body motion sensing systems”, Mr. Easttom specifies two
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`years of experience “related to accelerometers or similar devices.” EX2001, ¶ 13.
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`U.S. Patent 8,712,723
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`Mr. Easttom, however, recognizes that the difference is inconsequential to the
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`dispute here. Regardless of which definition the Board adopts, Mr. Easttom is
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`sufficiently qualified in the pertinent art. Id., ¶ 3.
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition fails to meet this burden.
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`The Petition challenges claims 1-3, 5-7, 10-18 under 35 U.S.C. § 103 over
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`Fabio2 and Pasolini.3
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`A. Claim Construction
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`As explained below, Petitioner bases its patentability challenges on erroneous
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`constructions, which provides an independent and fully-dispositive basis to deny the
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`Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-
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`00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub
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`4
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` 2
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` EX1006, U.S. Patent No. 7,698,097
`3 EX1005, U.S. Patent No. 7,463,997
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`U.S. Patent 8,712,723
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`nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016)
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`(finding Petitioner’s claim construction unreasonable in light of the specification,
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`and therefore, denying Petition as tainted by reliance on an incorrect claim
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`construction).
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`1.
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`“dominant axis”
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`Petitioner’s proposed construction violates the well-established rule against
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`reading limitations from the specification into the claim language. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
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`teachings from the specification, Petitioner seeks to limit the claim term “dominant
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`axis” to mean “the axis most influenced by gravity”. Pet. 9. However, the teachings
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`of the specification cited by Petitioner clearly state that they are only example
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`embodiments and are not meant to be limiting. See e.g., Pet. 9 quoting EX1001,
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`14:37-41 (“[i]n one embodiment…”) (emphasis added). The specification
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`specifically anticipates that multiple different types of activities may avail from the
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`disclosure, some of which will not use gravity as the dominant axis. FIGURE 2 is
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`but one example of selecting one of three axis measurements that will be the
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`“dominant axis” for determining a periodic movement and corresponding cadence.
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`Each axis has the effect of gravity; however, one is dominant due to the particular
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`activity encountered.
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`Petitioner expressly acknowledges that the ’723 Patent specifically provides
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`for different ways to determine the “dominant axis” in other embodiments. For
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`example, in one embodiment, the “dominant axis” is determined by orientation of
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`the device. See EX1001, 6:15-29. And here, while the orientation “may include
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`identifying a gravitational influence…” (EX1001, 6:21-23) (emphasis added), by
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`definition, that means the “dominant axis” is not limited to just gravitational
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`influence.
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`As a further example, in the same section, the specification also states that
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`“[t]herefore, a new dominant axis may be assigned when the orientation of the
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`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
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`electronic device 100 changes.” Id., 6:26-29 (emphasis added). Thus, the
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`specification recites yet another example of a different way to determine the
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`“dominant axis”. Another non-limiting example from the specification states: “[i]n
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`one embodiment, the dominant axis corresponds to a virtual axis that is a
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`component of a virtual coordinate system.” Id., 6:35-37 (emphasis added).
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`Petitioner’s proposed construction would impermissibly exclude preferred
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`embodiments, and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
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`embodiment is rarely, if ever, correct and would require highly persuasive
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`evidentiary support).
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`U.S. Patent 8,712,723
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`The Institution Decision further supports rejecting Petitioner’s proposed
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`construction. While the Institution Decision states that the specification purportedly
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`“supports Petitioner’s proposal” (Institution Decision at 9), in fact the example cited
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`by the Institution Decision supports rejecting Petitioner’s proposed construction.
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`Specifically, the Institution Decision cites to the specification for stating: “[i]n
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`alternative embodiments, the dominant axis does not correspond to one of the
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`actual axes of the inertial sensor(s) in a current orientation, but rather to an axis that
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`is defined as approximately aligned to gravity”. Institution Decision at 9-10 citing
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`EX1001, 6:32-35 (emphasis added). The above recitation merely confirms
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`Petitioner’s proposed construction is one of numerous alternative embodiments, and
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`therefore it confirms that Petitioner’s proposed construction would impermissibly
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`exclude preferred embodiments, and should be rejected. Vitronics, 90 F.3d at 1584–
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`85. The fact that the specification supports one of many alternative embodiments
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`is both unsurprising and insignificant.
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`Further, the Institution Decision points to the claim language as allegedly
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`“expressly requires the assignment of the dominant axis based on gravity.”
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`Institution Decision at 10. Here, however, the Board is mistaken. The claim
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`language merely requires that the dominant axis be assigned “with respect to
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`gravity”, for example, Claim 1 in relevant part recites: “assigning a dominant axis
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`with respect to gravity based on an orientation of the inertial sensor”. The claim
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`U.S. Patent 8,712,723
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`language does not “expressly require [] the assignment of the dominant axis based
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`on gravity” as the Institution Decision states, instead it merely requires assigning a
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`dominant axis and providing gravity as a point of reference.
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`According to the claim language, the dominant axis may be assigned with
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`respect to gravity in the sense that the dominant axis is orthogonal to gravity, or
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`opposing gravity, or in any configuration with respect to gravity. The claim
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`language certainly doesn’t require assigning the dominant axis to be aligned with
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`gravity, or be the axis “most influenced by gravity” as Petitioner proposes.
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`Petitioner’s proposed construction would
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`impermissibly exclude preferred
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`embodiments, and should be rejected. Vitronics, 90 F.3d at 1584–85.
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`Petitioner has not and cannot establish prima facie obviousness through
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`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
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`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
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`Synopsys, 669 Fed. Appx. 569. In any event, Petitioner fails to present a case of
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`prima facie obviousness even under its own construction.
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`2.
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` “cadence window”
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`The Institution Decision indicates that this term does not need construction.
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`See Institution Decision at 10. However, as discussed below in the context of the
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`claims, both “cadence” and “cadence window” as used in the claims have particular
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`meaning. That meaning is ignored by the Petitioner.
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`U.S. Patent 8,712,723
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`3.
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`“logic” terms
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`The Institution Decision determined that “the presumption against application
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`of § 112 ¶ 6 has not been overcome, and that no construction is necessary”.
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`Institution Decision at 8.
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`B.
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`The Pasolini Reference Was Already Considered by the USPTO
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`In its petition, Petitioner was silent in regards to whether U.S. Patent No.
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`7,463,997 to Fabio Pasolini et al. (“Pasolini”)(EX1005) was already considered by
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`the Patent Office. An inspection of the Prosecution History (EX1002) reveals that it
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`was, indeed, already considered. In particular, one of the applied references in the
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`prosecution history of the ‘723 Patent was U.S. Patent Application No.
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`2007/0143068 (Pasolini), which is the printed publication version of the now applied
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`Pasolini reference (Ex. 1005).
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`U.S. Patent 8,712,723
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`EX1005 at 1. Stated more succinctly, the exact same disclosure was already
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`considered by the Patent Office in the prosecution of the ‘723 Patent.
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`The following was one the of final substantive arguments made before the
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`‘723 Patent was allowed:
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`EX1002 at pg. 142 of 454 (Emphasis Added).
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`C. The Applied References Fail to Disclose a “Cadence Window”
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`Each of the challenged claims requires a “cadence window.” As recognized
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`by the Examiner in the prosecution history of the ‘723 Patent, Pasolini (EX1005)
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`fails to disclose such a cadence window. See EX1002 at 35-36 (indicating in notice
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`of allowance that prior art fails to disclose the now-challenged claims). Likewise,
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`the other Pasolini reference, Fabio (EX1006)4 also fails to disclose anything
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`resembling such a cadence window.
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`As explained in the ‘723 Specification, a “cadence window” corresponds to
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`the time allowable for a particular motion to occur. See e.g., EX1001 at 3:9-17, 56-
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`59; 3:64-6:6; 11:13-28; 12:45-50. To determine the “cadence” itself, motion criteria
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`is examined to determine whether a motion cycle corresponds to a particular motion.
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`See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. The motion cycle itself is not limited to
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`walking, but also can be any user activity having a periodic set of movements. Id.at
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`3:43-44. Non-limiting examples include rollerblading, biking, running, and walking.
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`Id. at 3:23-25. In one configuration, the cadence window is described as a rolling
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`average of previous detected cycles. Id at 3:66-4:10. The independent claims must
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`encompass such a “cadence window” being based on “rolling averages” because
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`dependent claims (e.g., Claim 4 and 19) narrow the updating of the “cadence
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`window” to being based on rolling averages.
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`The Petition points to Fabio (EX1006)’s “validation interval TV” as allegedly
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`corresponding to the claimed “cadence window.” See e.g., Petition at 33-35.
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` 4
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` The last name of the inventor is actually Pasolini; however, to maintain consistency
`with petitioner’s nomenclature, Fabio (the first name) is used. Both EX1005 and
`EX1006 share the same inventors and have the same filing dates.
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`U.S. Patent 8,712,723
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`However, such a validation interval TV has nothing to do with a “cadence” or the
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`claimed “cadence window.” Rather, Fabio (EX1006)’s validation interval TV is part
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`of validation logic used in a pedometer. This TV logic simply validates whether the
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`time between a current detected step and a prior detected step is within a 50%
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`variance of an immediately preceding period. If so, the prior (but not the current
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`step) is validated and counted. If not, the prior step is disregarded. This happens
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`regardless of (a) the time interval between steps, (b) whether a false positive is
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`detected, or (c) the time interval between other detected steps (e.g., steps preceding
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`the immediate step). Such a concept cannot reasonably correspond to a “cadence” or
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`“cadence window” as claimed, which can be based a rolling average of previous
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`detected cycles.
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`FIGURE 6 of Fabio (EX1006) is repeated below with annotations for values
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`of TA and TB from Col. 4, lines 45-50 provided. The sum of TA and TB yield TV
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`validation value.
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`Following the red arrow, TA is ½ the prior measured difference in time between
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`detected steps, or ½ DTK-1. Following the green arrow, TB is the prior measured
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`time difference, DTK-1. Simplified, as recognized by Fabio, the validation amount is
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`150% (or 3/2) of the prior measured time difference, DTK-1.
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`
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`(EX1006 at 4:50-52). Stated differently, only two inputs are used – current time
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`difference and prior time difference. The current time must be within a 50% variance
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`of the prior time. This TV logic is a backward looking in that the prior step is
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`counted if the next step is within the 50% variance timewise of the prior step. The
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`process can repeat for the next detected step with a similar look-back.
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`Fabio (EX1006)’s discussion of validation logic mentions nothing of trying
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`to figure out a cadence or considering whether a step occurs within a cadence
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`window. One cannot reasonably dispute that even under the broadest reasonable
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`interpretation of the term “cadence” and “cadence window” (in a manner consistent
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`with the specification), one of ordinary skill in the art would not view a 50%
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`validation check to a prior step as corresponding to a “cadence” or a “cadence
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`window” for an activity, which looks to an expected rhythm of a cadence (e.g., that
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`may be based on rolling averages) to determine a cadence window in which the next
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`13
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`step is expected to occur.
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`U.S. Patent 8,712,723
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`To further illustrate this point, according to Fabio (EX1006), an irregular
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`very-short step may not only invalidate a prior regular step (e.g., because the time
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`for the irregular step is not within the 50% variance), but also invalidate the very-
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`short step itself on the next validation step (e.g., because the 50% validation is really
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`small). Fabio explains that “[i] events and sequence of steps that are in any case too
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`short are thus advantageously ignored” (EX1006, 5:56-57) and that “[s]tep
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`sequences that are shorter and not very significant in relation to the activity
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`performed can be ignored.” EX1006, 6:9-11. The problem with this approach is that
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`a legitimate regular step is invalidated. This is because of Fabio (EX1006)’s inability
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`to consider a cadence/cadence window and its interest in the timing between the
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`current and prior steps only.
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`D. The Applied References Fail to Disclose Detected Motions “Within
`a Cadence Windows”
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`Assuming for the sake of argument that Fabio (EX1006)’s “validation interval
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`TV” were a cadence window (which it is not), Fabio (EX1006) still does not disclose
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`the claims because of its backward-looking validation. Fabio (EX1006)’s TV
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`validation process uses a time period of a current step to determine whether a prior
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`step is counted. However, the claims require counting with respective to steps
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`“within a cadence window.” None of the counting in Fabio (EX1006) is with respect
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`to a step within the validation interval TV. Rather, the counted steps occur before
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`the validation interval TV being examined.
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`E.
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`The Applied References Fail to Disclose an Update to the Cadence
`Window as “Actual Cadence” or “Cadence” Changes
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` The challenged claims all recite an update to the cadence window as either
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`an “actual cadence” or a “cadence” changes. The applied reference fail to disclose
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`such an update. Fabio (EX1006)’s “validation interval TV” for a particular step
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`considers only an immediately preceding step and time period and cannot account,
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`for example, for a rolling average of previous detected cycles. One cannot
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`reasonably dispute that a singular measurement by itself could not be considered a
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`cadence change.
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`To the extent Petitioner argue that “within” doesn’t actually mean “within,”
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`Patent Owner directs the Board to the specification, for example, FIGURE 2 and its
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`corresponding discussion in which counting of a step considers whether such a step
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`is “within” its respective cadence window. There is no indication (and Petitioner
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`has cited none) where a step is counted if another step falls within a different cadence
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`window.
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`F.
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`The Applied References Fail to “Assigning a Dominant axis with
`Respect to Gravity Based on an Orientation of the Inertial
`Sensor”
`The Petitioner argues that the dominant axis must be vertical (direction of
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`gravity) and hence, Polisnelli (EX1005)’s selection of the gravitational axis meets
`the claim features. However, the ‘723 Patent recognizes that multiple activities may
`occur and that the dominant axis may be other than vertical (gravity) – hence the
`reference to “dominant axis.” FIGURE 2 of the ‘723 Patent gives an example of
`three axis measurements where one acceleration activity is dominant over the others
`and can be used for periodic motion detections for cadence and cadence window
`determinations. All of these axis measurements have an acceleration with respect
`to gravity; one just happens to be dominant over the other two.
`Petitioner acknowledges, and tacitly admits that Fabio does not disclose
`“assigning a dominant axis with respect to gravity based on an orientation of the
`inertial sensor”, because Fabio (EX1006) can only “select[] the acceleration signal
`corresponding to the detection axis nearest to the vertical.” Pet. 28-29; EX1006,
`8:23-25. Thus, the device of Fabio (EX1006) does not disclose “assigning a
`dominant axis” as required by the claims and furthermore, Fabio (EX1006) does not
`disclose assigning a dominant axis based on an orientation of the inertial sensor, as
`Petitioner admits. Pet. 29. The Institution Decision disagrees that Fabio (EX1006)
`does not disclose assigning a dominant axis based on the orientation of the inertial
`sensor, by paraphrasing Fabio as disclosing selecting a vertical axis based on
`orientation. However, that is not what Fabio discloses. Instead, Fabio states:
`“The detection axis nearest to the vertical is the axis
`along which the contribution of the acceleration of
`gravity is greater. The pedometer can then be used
`independently of how it is oriented.”
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`EX1006, 8:30-33.
`The passage above discloses only that the device may be used independently
`of how it is oriented. Fabio (EX1006) is silent as to the orientation of the inertial
`sensor, and Fabio (EX1006) does not disclose assigning a dominant axis based on
`an orientation of the inertial sensor, as required by the claim language.
`Next, the Institution Decision also argues that Pasolini (EX1005) “takes into
`account the orientation of the acceleration in detecting the main axis.” Institution
`Decision at 18. However, just like with Fabio (EX1006), the passage of Pasolini
`(EX1005) cited by the Institution Decision does not disclose the required claim
`language:
`
`“For example, the main vertical axis can be identified at
`each acquisition of a new acceleration sample, block 30
`of FIG. 4, so as to take into account variations in the
`orientation of the pedometer device 1, and consequently
`of the accelerometer 2 arranged inside it.”
`EX1005, 8:20-24. Even here, there is nothing in the passage above that shows that
`the device of Pasolini (EX1005) assigning a dominant axis based on an orientation
`of the inertial sensor as required by the claim language. At best, the “variations in
`the orientation” are taken into account as a subsequent step, after the “main vertical
`axis” is identified.
`Recognizing that Fabio (EX1006) does not disclose this limitation, Petitioner
`relies on a combination of Fabio (EX1006) and Pasolini (EX1005). However, the
`proposed combination fails because neither Fabio (EX1006) or Pasolini (EX1005).
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`discloses “assigning a dominant axis with respect to gravity based on an orientation
`of the inertial sensor.” Instead, Fabio (EX1006) merely selects the “axis nearest to
`the vertical”, without any regard for orientation. Pet. 28; EX1006, 8:23-25. And
`Pasolini (EX1005) only contemplates determining the “main vertical axis”
`(EX1005, 8:18-19) via the “vertical detection axis z” component. EX1005, 2:62.
`Whereas, the claim language requires “assigning a dominant axis with respect to
`gravity”, which allows for any direction and axis to become dominant. See also
`EX2001, ¶¶ 18-19. Thus, neither Fabio (EX1006) nor Pasolini (EX1005), alone or
`in combination disclose changing axis, and therefore does not disclose “assigning a
`dominant axis with respect to gravity based on an orientation of the inertial sensor”.
`Furthermore, “a patent composed of several elements is not proved obvious merely
`by demonstrating that each of its elements was, independently, known in the prior
`art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d
`705 (2007). The obviousness analysis must focus on the knowledge and motivations
`of the skilled artisan at the time of the invention. InTouch Techs., Inc. v. VGO
`Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness
`there must be an explanation of why a person of ordinary skill in the art would
`modify the prior art references to create the claimed invention. Cutsforth, Inc. v.
`MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`(Fed.Cir.1998).
`The Petition merely provides conclusory statements and speculation through
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`its declarant for the proposition that “a POSITA would have understood that Fabio’s
`pedometer would assign the vertical detection axis with respect to gravity using
`Pasolini’s technique of identifying the vertical detection axis each acquisition of a
`new acceleration signal to take into account changes in the device’s orientation.”
`Pet. 29.
`However, Petitioner cannot merely speculate through its declarant, outside
`the four corners of the reference, to carry its burden. The Federal Circuit has
`instructed that “legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`been common knowledge in the art). Further, the obviousness analysis must focus
`on the knowledge and motivations of the skilled artisan at the time of the invention.
`InTouch Techs, 751 F.3d at 1348. And there must be an explanation of why a person
`of ordinary skill in the art would modify the prior art reference to create the claimed
`invention. Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In
`re Rouffet, 149 F.3d at 1359.
`Petitioner speculates through its declarant, for example, that “[a] POSITA
`would have also understood that implementing Pasolini’s additional teachings into
`Fabio’s device would result in a signal that is less susceptible to the type of errors
`that Fabio is concerned with preventing, …” Pet. 24. The Petition purports to rely
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`on its declarant for support of its speculative and conclusory statements, however,
`the declaration merely parrots the exact same speculative and conclusory statements
`(compare Pet. 24 with EX1003, ¶ 66), without the required analysis or explanation.
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`The Institution Decision points to Petitioner’s conclusory argument that a
`POSITA would have sought to improve Fabio (EX1006)’s accuracy as being
`“reasonable, at this juncture, [as being] the rationale for the combination of Fabio
`with the Pasolini teachings of identifying a main vertical axis at each acquisition of
`the acceleration sample to take into account variations in the orientation of the
`accelerometer.” Institution Decision at 23. And the Institution Decision cites to a
`partially excerpted passage in Fabio (EX1006) that states: the “nearer the detection
`axis is used to the vertical, in fact, the greater the amplitude of the signal useful for
`step recognition.” Institution Decision at 22-23 citing EX1006, 8:25-27. However,
`the Institution Decision left out the sentence immediately preceding that excerpt. In
`full, the passage states:
`“Finally, the inertial sensor can be of the type with two or
`three axes of detection. In this case, step recognition can
`advantageously be performed by selecting the
`acceleration signal corresponding to the detection axis
`nearest to the vertical. The nearer the detection axis used
`is to the vertical, in fact, the greater the amplitude of the
`signal useful for step recognition.”
`
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`EX1006, 8:21-27.
`A review of the passage above shows that in context, Fabio (EX1006) does
`not express any concern about a lack of accuracy, instead, Fabio (EX1006), in the
`reference itself, presented a solution: the use of an inertial sensor “of the type with
`two or three axes of detection.” Thus, Fabio (EX1006), and the passage above, does
`not provide a POSITA with a reason to combine because there is no evidence that
`Fabio (EX1006) expressed a concern about a lack of accuracy, and in fact, to the
`extent there is any problem with accuracy, Fabio (EX1006) expressly purports to
`solve it.
`As another example, Petitioner cite
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